Ben How, LLC

Trademark Trial and Appeal Board

Mar 18, 2009

No. 78918570 (T.T.A.B. Mar. 18, 2009)

Oral Hearing: Mailed: March 18, 2009
January 15, 2009 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Ben How, LLC
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Serial No. 78918570
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Hadley M. Hindmarsh of Keith Miller Butler, Schneider &
Pawlik, PLLC for Ben How, LLC.

Jason Paul Blair, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Hairston, Kuhlke and Ritchie, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Ben How, LLC filed an application to register the mark
I.O. METRO and design, shown below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78918570
2
for “retail furniture stores” in International Class 35.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, on the ground that
applicant’s mark, when used in connection with the
identified services, so resembles the previously registered
mark METRO for “furniture, namely, upholstered seating,
wooden tables, desks and cabinets, and chairs;”2 and
“office furniture,”3 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs, and an
oral hearing was held.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201

1 Serial No. 78918570, filed June 28, 2006, which alleges dates
of first use as early as September 23, 2005. The mark is
described as follows: “The mark consists of a large stylized
letter ‘o’ with a smaller letter ‘i’ inside it and a rectangle
with a curved left side in which the ‘o’ rests. The rectangle
contains the words I.O. METRO.”
2 Registration No. 1286037, issued July 17, 1984, renewed.
3 Registration No. 2504232, issued November 6, 2001, Section 8
affidavit accepted and Section 15 affidavit acknowledged. The
two cited registrations are owned by the same entity.
Ser No. 78918570
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(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first consider the goods and services of applicant
and registrant. It is not necessary that the respective
goods and services be competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods and services are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods and services are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
In addition, the issue of likelihood of confusion is
determined on the basis of the goods and services as set
forth in the involved application and the cited
registrations, and not in light of what such goods and
services are asserted to actually be. See e.g., Octocom
Systems Inc. v. Houston Computer Services, Inc., 918 F.2d
Ser No. 78918570
4
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490,
1 USOQ2d 1813 (Fed. Cir. 1987).
Thus, where applicant’s and registrant’s goods and
services are broadly described as to their nature and type,
it is presumed in each instance that in scope the
application and registrations encompass not only all the
goods and services of the type described therein, but that
the identified goods and services move in all channels of
trade which are normal for those goods and services and
that they would be purchased by all potential buyers
thereof. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981).
Applying these principles to the goods and services in this
case, we find that applicant’s furniture retail stores are
related to registrant’s upholstered seating, wooden tables,
desks, cabinets and chairs and office furniture. Applicant
argues that it is a modern, sophisticated and unique home
furnishings retailer whereas registrant is an office
furniture mass retailer. However, applicant’s recitation
of services is not limited in the manner argued by
applicant. Moreover, while we recognize that Registration
No. 2504232 covers office furniture, the upholstered
seating, wooden tables, desks, cabinets and chairs listed
in Registration No. 1286037 are not limited to office use.
Ser No. 78918570
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We cannot read limitations into the descriptions of the
goods and services. Rather, applicant’s retail furniture
store services are broadly identified and encompass the
sale of home and office furniture. In this regard, we note
that the examining attorney has made of record a number of
third-party registrations for marks which cover retail
furniture store services and include the sale of both home
and office furniture. Furthermore, the recitation of
services in Registration No. 1286037 is broad enough to
encompass upholstered seating, wooden tables, desks,
cabinets and chairs for both home and office.
It is well settled that confusion is likely to result
from the use of the same or similar mark for goods, on the
one hand, and for services involving those goods, on the
other hand. In this case, retail furniture store services
may involve the sale of both home and office furniture.
Thus, we find that applicant’s retail furniture stores are
sufficiently related to registrant’s upholstered seating,
wooden tables, desks, cabinets and chairs and office
furniture that, when offered under the same or similar
marks, confusion is likely to occur. See In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir.
1988) [BIGG’S (stylized) for retail grocery store and
general merchandise store services held likely to be
Ser No. 78918570
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confused with BIGGS and design for furniture]; In re United
Service Distributors, Inc., 229 USPQ 237 (TTAB 1986)
[design for distributorship services in the field of health
and beauty aids held likely to be confused with design for
skin cream]; and Steelcase Inc. v. Steelcare Inc., 219 USPQ
433 (TTAB 1983) [STEELCARE INC. for refinishing of
furniture, office furniture, and machinery held likely to
be confused with STEELCASE for office furniture and
accessories).
Insofar as the channels of trade and classes of
purchasers are concerned, in the absence of any limitations
in the respective identifications of goods and services, we
find that, at the very least, the channels of trade and
purchasers are overlapping. Applicant contends that
purchasers of office furniture, in particular, are
sophisticated. Apart from the fact that applicant has
offered no support for this contention, even assuming that
purchasers of office furniture are discriminating, this
does not mean that they are immune from confusion as to the
source of the respective goods and services. In re
Decombe, 9 USPO2d 1812 (TTAB 1988).
In sum, we find that applicant’s services and
registrant’s goods are related, that the trade channels and
purchasers are overlapping, and that when the respective
Ser No. 78918570
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goods and services are offered under the same or similar
marks, confusion is likely to result.
Turning then to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, the test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods and services
offered under the respective marks is likely to result.
The focus is on the recollection of the average consumer
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).

Ser No. 78918570
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Applicant’s mark is I.O. METRO and design as shown
below,

Registrant’s mark is METRO. Applicant has essentially
taken the entirety of the registered mark and added the
letters I.O. and a design. This additional matter is
insufficient to distinguish the marks. Although the design
in applicant’s mark is prominent, when a mark consists of a
word portion and a design portion, the word portion is more
likely to be impressed upon a purchaser’s memory and used
in calling for the goods and/or services. In re Appetito
Provisions Co., Inc., 3 USPQ2d 1553 (TTAB 1987). Thus, the
dominant portion of applicant’s mark, I.O. METRO is
substantially similar to registrant’s mark, METRO. When we
consider the marks in their entireties, we find that they
are similar in sound and appearance.
With respect to the connotation of the marks, we find
that due to the shared term METRO, the marks also have
similar connotations. There is nothing in the record to
indicate that the letters I.O. in applicant’s mark are
anything other than arbitrary, and the addition of these
letters does not significantly alter the connotation of
Ser No. 78918570
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applicant’s mark. Furthermore, when applicant’s mark and
registrant’s mark are considered in their entireties, they
are sufficiently similar in overall commercial impression
so that when used on the related goods and services in this
case, confusion would be likely to occur among consumers.
One final argument made by applicant requires
comment. Applicant argues that registrant’s mark is
generic. However, as correctly noted by the examining
attorney, a contention that such mark is generic
constitutes an impermissible collateral attack on the
validity of the cited registrations and will not be
entertained in an ex parte appeal. See e.g., In re Peebles
Inc., 23 USPQ2d 1795 (TTAB 1992). Accordingly, no
consideration has been given to applicant’s arguments in
this regard.
We conclude that consumers familiar with registrant’s
upholstered seating, wooden tables, desks, cabinets and
chairs and/or office furniture offered under the mark METRO
would be likely to believe, upon encountering applicant’s
mark I.O. METRO and design for retail furniture stores,
that the respective goods and services originated with or
are somehow associated with or sponsored by the same
entity. To the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
Ser No. 78918570
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doubt is required to be resolved in favor of the prior
registrant.
Decision: The refusal to register under Section 2(d)
in view of the two cited registrations is affirmed.